USPTO Patents Application 09624191

United States Patent and Trademark Office

UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark OfTlcc
AdJress: COMMISSrONER FOR PATENTS
P.O. Box 1450

Alexandria, Virginia 22313-1450
www.usplo.gov

APPLICATION NO.

HLING DATE

FIRST NAMED INVENTOR

ATTORNEY DOCKET NO.

CONFIRMATION NO.

09/624,191

07/24/2000

Mark Donner

06975-100001

6404

26171 7590 04/07/2004

FISH & RICHARDSON P.C.
1425 K street, N.W.
IITH FLOOR

WASHINGTON, DC 20005-3500

EXAMINER

EL CHANTI, HUSSEIN A

ART UNIT

PAPER NUMBER

2157

DATE MAILED: 04/07/2004

Please find below and/or attached an Office commiinication concerning this application or proceeding.

PTO-90C (Rev. 10/03)

Application No.

Applicant(s)

ni

Ur

^/f f f 0\7 ^ V ■>« wf f ^viiittticit y

09/624,191

DONNER ET AL

Examiner

Hussein A El-chanti

Art Unit

2157

The MAILING DATE of this communication appears on the cover sheet with the correspondence address
Period for Reply

A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTH(S) FROM
THE MAILING DATE OF THIS COMMUNICATION.

- Extensions of time may be available under the provisions of 37 CFR 1 .136(a). In no event, however, may a reply be tlnnely filed
after SIX (6) MONTHS from the mailing date of this communication.

- If the period for reply specified above is less than thirty (30) days, a reply within the statutory minimum of thirty (30) days will be considered timely.

- If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.

- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
earned patent term adjustment. See 37 CFR 1.704(b).

Status

^)M Responsive to communication(s) filed on 1 6 January 2004 .
2a)n This action is FINAL. 2b)l3 This action is non-final.

3) 0 Since this application is in condition for allowance except for formal matters, prosecution as to the merits is

closed in accordance with the practice under Ex parte Quayle, 1935 CD. 11, 453 O.G. 213.

Disposition of Claims

4) M Claim(s) 1-20 is/are pending in the application.

4a) Of the above claim(s) is/are withdrawn from consideration.

5) 0 Claim(s) is/are allowed.

6) M Claim(s) 1-20 is/are rejected.
?)□ Claim(s) is/are objected to.

8) n Claim(s) are subject to restriction and/or election requirement.

Application Papers

9) 0 The specification is objected to by the Examiner.

10) 0 The drawing(s) filed on is/are: aO accepted or bO objected to by the Examiner.

Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1 .85(a).
Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).

11) n The oath or declaration is objected to by the Examiner. Note the attached Office Action orfomn PTO-152.

Priority under 35 U.S.C. § 119

12) n Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
a)n All b)n Some * €)□ None of:

1 .□ Certified copies of the priority documents have been received.

20 Certified copies of the priority documents have been received in Application No. .

3.n Copies of the certified copies of the priority documents have been received in this National Stage
application from the International Bureau (PCT Rule 17.2(a))-
See the attached detailed Office action for a list of the certified copies not received.

Attachment(s)

1) K Notice of References Cited (PTO-892) 4) □ Interview Summary (PTO-413)

2) □ Notice of Draftsperson's Patent Drawing Review (PTO-948) Paper No(s)/Mail Date. .

3) □ Information Disclosure Statement(s) (PTO-1449 or PTO/SB/08) 5) □ Notice of Informal Patent Application (PTO-1 52)

Paper No(s)/Mail Date . 6) □ Other: .

U.S. Patent and Trademark Office
PTOL-326 (Rev. 1-04)

Office Action Summary

Part of Paper No./Mall Date 16

Application/Control Number: 09/624,191
Art Unit: 2157

Page 2

Response to Amendment

1. This action is responsive to connnnunication received on Jan. 16, 2004. Claims12,
17 and 19 has been amended. Claims 1-20 are pending examination.

2- The drawings are objected to as failing to comply with 37 CFR 1 .84(p)(4)
because reference characters reference characters "110" and "210" have both been
used to designate host system; reference characters "135" and "235" have both been
used to designate host device; reference characters "140" and "240" have both been
used to designate host controller; and reference characters "150" and "255" have both
been used to designate communication pathways. A proposed drawing correction or
corrected drawings are required in reply to the Office action to avoid abandonment of
the application. The objection to the drawings will not be held in abeyance.

The following Is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that
form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless -

(e) the invention was described in (1 ) an application for patent, published under section 122(b), by
another filed in the United States before the invention by the applicant for patent or (2) a patent
granted on an application for patent by another filed In the United States before the invention by the
applicant for patent, except that an international application filed under the treaty defined in section
351(a) shall have the effectsfor purposes of this subsection of an application filed In the United States
only if the International application designated the United States and was published under Article 21(2)
of such treaty in the English language.

3, Claims 1, 3, 6, 7 and 11-17 are rejected under 35 U.S.C. 102(e) as being
anticipated by Peterson et al., U.S. Patent No. 6,594,682 (referred to hereafter as
Peterson).

Drawings

Claim Rejections - 35 USC § 102

Application/Control Number: 09/624,191 Page 3

Art Unit: 2157

As per claims 1,12 and 17, Peterson teaches a method and computer program
alerting a client of a state of change at a remote sever comprising:

creating a user profile indicating preference to receive at least one alert
corresponding to a change in state at the remote server (see col. 10 lines 17-24);

connecting to communications system including the remote server (see col. 4
lines 17-27);

generating an address of the remote server (see col. 4 lines 40-46);

navigating to the address of the remote server (see col. 4 lines 46-52);

retrieving data corresponding to a particular type of alert from the remote serve
(see col. 4 lines 46-52); and

using the retrieved data in delivering an alert to the client (see col. 4 lines 17-27).

As to claim 3, Peterson teaches the method of claim 1 wherein the address
comprises a uniform resource locator (see col. 4 lines 41-46).

As per claims 6, Peterson teaches the method of claim 1 wherein using a
graphical user interface to create the user profile (see col. 10 lines 9-32).

As per claims 7, Peterson teaches the method of claim 1 wherein storing the user
profile on a host (see fig. 8 and its corresponding illustration)

As to claim 1 1 , Peterson teaches the method of claim 1 wherein the alert
corresponds to a change at a remote third party server (see col. 10 lines 10-24).

As to claim 13, Peterson teaches the computer readable medium claim 12
comprising a disc (see fig. 1 and 2 and corresponding Illustration).

Application/Control Number: 09/624,191 Page 4

Art Unit: 2157

As to claim 14, Peterson teaclies the computer readable medium claim 12
comprising a client device (see fig. 1 and 2 and corresponding illustration).

As to claim 15, Peterson teaches the computer readable medium claim 12
comprising a host device (see fig. 1 and 2 and corresponding illustration).

As to claim 16, Peterson teaches the computer readable medium claim 12
comprising a propagated signal (see fig. 1 and 2 and corresponding illustration).

Claim Rejections - 35 USC § 103

The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all

obviousness rejections set forth in this Office action:

(a) A patent may not be obtained though the invention is not identically disclosed or described as set
forth in section 102 of this title, if the differences between the subject matter sought to be patented and
the prior art are such that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said subject matter pertains.
Patentability shall not be negatived by the manner in which the invention was made.

4. Claims 2, 4 and 5 are rejected under 35 U.S.C. 103(a) as being unpatentable

over Peterson in view of Wick, U.S. Patent No. 6,691,162.

As to claim 8, Peterson teaches alerting a client of a state of change at a remote

sever comprising creating a user profile indicating preference to receive at least one

alert corresponding to a change in state at the remote server (see the rejection of claim

1).

Peterson does not explicitly teach the claimed limitation "instant messaging
system". However Wick teaches a method of communicating notification between a
server and a client using an instant messaging system (col. 4 lines 6-18).

It would have been obvious for one of the ordinary skill in the art at the time of
the invention to modify Peterson by incorporating an instant messaging system as

Application/Control Number: 09/624,191 Page 5

Art Unit: 2157

taught by Wick because doing so would allow the user to be notified of updates or
changes on a server instantaneously and therefore retrieve changes in the fastest
communication method possible.

As to claim 4, Peterson teaches the method of claim 1 wherein navigating to the
address includes using a browser (see col. 10 lines 17-24),

Peterson does not explicitly teach the claimed limitation "instant messaging
system". However Wick teaches a method of communicating notification between a
server and a client using an instant messaging system (col. 4 lines 6-18).

It would have been obvious for one of the ordinary skill in the art at the time of
the invention to modify Peterson by incorporating an instant messaging system as
taught by Wick because doing so would allow the user to be notified of updates or
changes on a server instantaneously and therefore retrieve changes in the fastest
communication method possible.

As to claim 5, Peterson teaches the method of claim 4 wherein the browser
comprises a HTTP engine (see col. 6 lines 37-52).

5. Claims 8-10 are rejected under 35 U.S.C. 103(a) as being unpatentable over
Peterson in view of Payne et al., U.S. Patent No. 6,021,433 (referred to hereafter as
Payne).

As to claim 8, Peterson teaches alerting a client of a state of change at a remote
sever comprising creating a user profile indicating preference to receive at least one
alert corresponding to a change in state at the remote server (see the rejection of claim
1).

Application/Control Number: 09/624, 1 91 Page 6

Art Unit: 2157

Peterson does not explicitly teach the claimed limitation "remote mail server".
Payne teaches communication system using a server where the server could be a mail
server (see col. 7 lines 57-col. 8 lines 5).

It would have been obvious for one of the ordinary skill in the art at the time of
the invention to implement a mail server in Peterson as taught by Payne because doing
so would allow the user to check for updates using an e-mail server rather than
accessing a webpage and therefore decreasing access to a remote server which might
result in overload at a remote server.

As to claim 9, Peterson teaches a change at a remote weather server (see col. 7
lines 57-col. 8 lines 5).

As to claim 10, Peterson teaches a change at a remote stock server (see col. 7
lines 57-col. 8 lines 5).

6. Claims 1 8-20 do not teach or define any additional limitation over claims 1 -1 7
and therefore are rejected for similar reasons.

7. The prior art made of record and not relied upon is considered pertinent to
applicant's disclosure.

- Method And Apparatus Providing Notification Of Network Conditions by Hodges
et al., U.S. Patent No. 6,449,365.

8. Any inquiry concerning this communication or earlier communications from the
examiner should be directed to Hussein A El-chanti whose telephone number is
(703)305-4652. The examiner can normally be reached on Mon-Fri 8:30-5:00.

Application/Control Number: 09/624,191

Page 7

Art Unit: 2157

If attempts to reach the examiner by telephone are unsuccessful, the examiner's
supervisor, Ario Etienne can be reached on (703)308-7562. The fax phone number for
the organization where this application or proceeding is assigned is 703-872-9306.

Information regarding the status of an application may be obtained from the
Patent Application Information Retrieval (PAIR) system. Status information for
published applications may be obtained from either Private PAIR or Public PAIR.
Status information for unpublished applications is available through Private PAIR only.
For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
you have questions on access to the Private PAIR system, contact the Electronic
Business Center (EBC) at 866-217-9197 (toll-free).

Hussein El-chanti

April 2, 2004

SUPERVISORY PATENT EXAMINI

TECHNOLOGY CEMTEB 2100